INTELLECTUAL PROPERTY CODE (R.A 8293) in the art to which said subject matter pertains.

Patentability shall
not be negatived by the manner in which the invention was
A. Patents made. (Graham v. John Deere Co., 383 U.S. 1, 21 Feb. 1966)
- is a right given to the inventors of these patentable inventions.
- is an exclusive right granted to an investor over an invention or a utility XPN: In the case of drugs and medicine, there is no inventive step
model or industrial design to sell, use, and make the same for commerce and if the invention results from the mere discovery of:
industry. a. A new form or new property of a known substance which
does not result in the enhancement of the known efficacy of
1. Patentable Inventions - (Sec. 21, of RA 8293) that substance; or
Any technical solution of a problem in any field of human activity which is b. The mere discovery of any new property or new use for a
new, involves an inventive step and is industrially applicable shall be known substance; or
patentable. It may be, or may relate to, a product, or process, or an c. The mere use of a known process unless such a known
improvement of any of the foregoing. (Sec. 7, R.A. No. 165a) process results in a new product that employs at least one new
reactant. (Sec. 26.2, IPC)
REQUISITES OF PATENTABILITY
a. Novelty c. Industrial Applicability
- forms part of the prior art An invention that can be produced and used in any industry meets the
Prior Art - Everything which has been made available to the public industrial application requirement of patent registrability. This means an
anywhere in the world, before the filing date or the priority date of the invention is not merely theoretical, but also has a practical purpose. If the
application claiming the invention; and The whole contents of an invention is a product, it should be able to produce a product and if the
earlier published Philippine application or application with an earlier invention is a process, it should be able to lay out a process. (WIPO, IP
priority date of a different inventor. (Sec. 24, IPC) Handbook 2nd Ed., 2004)

b. Inventive Step NOTE: It may be, or may relate to, a product or process or an improvement of
GR: An invention involves an inventive step if, having regard to prior any of the foregoing. (Sec. 21, IPC)
art, it is not obvious to a person skilled in the art at the time of the filing
date or priority date of the application claiming the invention. (Sec. Example: Someone who develop in making way of making new tiles, that person
26.1, IPC) was issued a patent but latter on someone filed petition for cancellation of
Skilled in the art - persons involved in the manufacturer. that patent on the ground that it is not new, According to the petitioner, the
tile making has been in existence since the ancient times, so how can a new
Test of Non-Obviousness way of making files maybe new and patentable.
- A patent may not be obtained though the invention is not
identically disclosed or described, if the differences between the SC: While tile making is an old process nevertheless the inventor came out of
subject matter sought to be patented and the prior art are such new improvement of existing product and existing process.
that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill
1
 - The tiles that he was able to make were used as decorative items, 2. Non-Patentable Inventions
pwede siya as wall tiles. An invention may not be patentable because it does not comply with the
- The invention is patentable elements of patentability, or it falls under non-patentable inventions
enumerated under Sec. 23 of the IPC. (Salao, 2018)

The following are non-patentable inventions: (Tr-A-P-S-A-D2)

1. Methods for Treatment of the human or animal body by surgery or therapy
and diagnostic methods practiced on the human or animal body. This
provision shall not apply to products and composition for use in any of these
methods;

2. Aesthetic creations;

3. Plant varieties or animal breeds or essentially biological processes for the

production of plants or animals. This provision shall not apply to
micro-organisms and non-biological and microbiological processes;

Note: there is a law protecting new plant varieties but it is not patent,
it protect the plant varieties

4. Schemes, rules and methods of performing mental acts, playing games or

doing business, and programs for computers;
GR: Computer programs are not patentable but are
copyrightable.
XPN: They can be patentable if they are part of a process.
(e.g., business process with a step involving the use of a
computer program)

5. Anything which is contrary to public order or morality;

6. In the case of Drugs and medicines, mere discovery of a new form or new
property of a known substance which does not result in the enhancement
of the efficacy of that substance or the new use for a known substance, or
the mere use of a known process unless such known process results in a new
product that employs at least one new reactant; and

2
 2. The employer, if the inventive activity is the result of the
7. Discoveries, scientific theories and mathematical methods. (Sec. 22, performance of his regularly assigned duties, unless there is an
IPC) agreement, express or implied, to the contrary. (Sec. 30.2,
IPC)
3. Ownership of a Patent
a. Right of Patent d. Right for Priority -
Persons Entitled to a Patent Priority Date - An application for patent filed by any person who has
1. Inventor, his heirs, or assigns; previously applied for the same invention in another country which by
2. Joint invention – jointly by the inventors; (Sec. 28, IPC) treaty, convention, or law affords similar privileges to Filipino citizens,
3. Two or more persons invented separately and shall be considered as filed as of the date of filing the foreign
independently of each other – to the person who filed an application. (Sec. 31, IPC)
application; or
4. Two or more applications are filed – the applicant who has Example: you file a patent in another country, before the Philippines,
the earliest filing date or, the earliest priority date. (Sec. 29, IPC) in the determination of who filed first, then you can claim priority filing
date in the other country, so you will be given the priority.
b. First-to-file Rule
1. If two (2) or more persons have made the invention separately and NOTE: THERE IS A SIMILAR RULE IN TRADEMARKS; unlike here you can propose a
independently of each other, the right to the patent shall belong to petition or an application for the registration of the trademark, meron din
the person who filed an application for such invention; or naman cancellation of application of trade mark. In case of patent walang
2. Where two or more applications are filed for the same invention, to opposition, need for the approval of the patent then filed in the IPO for
the applicant which has the earliest filing date. (Sec. 29, IPC) cancellation of patent

Note: it has the same rules in trademarks Filing date is accorded only when all the requirements provided under Sec. 40
are present.
c. Inventions Created Pursuant to a Commission
- The person who commissions the work shall own the patent, unless Priority Date comes into play when there is an application for patent for the
otherwise provided in the contract. (Sec. 30.1, IPC) same invention that was filed in another country. (Salao, 2012)

Inventions Pursuant to Employment Conditions in Availing of Priority Date

In case the employee made the invention in the course of his 1. The local application expressly claims priority;
employment contract, the patent shall belong to: 2. It is filed within 12 months from the date the earliest foreign application was
1. The employee, if the inventive activity is not a part of his filed; and
regular duties even if the employee uses the time, facilities, 3. A certified copy of the foreign application together with an English
and materials of the employer; translation is filed within six (6) months from the date of filing in the Philippines.
(Sec. 31, IPC)

3
 1. Prosecute the application as his own;
Steps in the Registration of a Patent (F-A-Fo-Cla-P-S-G-P-I) 2. File a new patent application;
The procedure for the grant of patent may be summarized as follows: 3. Request the application to be refused; or
1. Filing of the application; 4. Seek cancellation of the patent. (Sec. 67.1, IPC)
2. Accordance of the filing date;
3. Formality examination; Remedies of the True and Actual Inventor (1993, 2005 BAR)
4. Classification and Search; If a person, who was deprived of the patent without his consent or
5. Publication of application; through fraud is declared by final court order or decision to be the true
6. Substantive examination; and actual inventor, the court shall order for his substitution as patentee,
7. Grant of Patent; or at the option of the true inventor, cancel the patent, and award actual
8. Publication upon grant; and damages in his favor if warranted by the circumstances. (Sec. 68, IPC)
9. Issuance of certificate. (Salao, 2019)
In the two circumstances aforementioned, the court shall furnish the
4. Grounds for Cancellation of a Patent Office a copy of the order or decision which shall be published in the IPO
Any interested party may petition to cancel any patent or any claim or Gazette within three (3) months from the date such order or decision
parts of a claim any of the following grounds: became final and executor and shall be recorded in the register of the
1. Invention is not new or patentable; Office. (Sec. 69, IPC)
2. Patent does not disclose the invention in a manner sufficiently clear and
complete for it to be carried out by any person skilled in the art; Time to File Action in Court
3. The patent is contrary to public order or morality; (Sec. 61.1, IPC) The actions indicated in Secs. 67 and 68 shall be filed within one (1) year
4. The patent is found invalid in an action for infringement; (Sec. 82 IPC) or from the date of publication made in accordance with Secs. 44 and
5. The patent includes matters outside the scope of the disclosure 51,respectively. (Sec. 70, IPC)
contained in the application. (Sec. 1, Rule 3, Regulations on Inter Partes
Proceeding) 6. Rights Conferred by a Patent
1. In case of a Product – Right to restrain, prohibit and prevent any
NOTE: If the ground for cancellation relates to some of the claims or parts unauthorized person or entity from making, using, offering for sale,
of the claim only, cancellation may be effected to such extent only. (Sec. selling, or importing the product; or using the process;
61.2, IPC) - Assignable and transferable
- Can enter into voluntary licensee contract

5. Remedy of the True and Actual Inventor 2. In case of Process – Right to restrain, prohibit and prevent any unauthorized
Remedies of Persons with a Right to a Patent person or entity from manufacturing, dealing in, using, offering for sale, selling,
If a person other than the applicant is declared by final court order or or importing any product obtained directly or indirectly from such process. ;
decision as having the right to a patent, he may within 3 months after and (Sec. 71.1, IPC)
such decision has become final:

4
 3. Right to assign the patent, to transfer by succession, and to conclude c. Exclusively for experimental use of the invention for scientific
licensing contracts. (Sec. 71.2, IPC) purposes or educational purposes; (Sec. 72.3, IPC)

NOTE: The rights conferred by a patent application take effect after d. In the case of drugs and medicines, where the act includes testing,
publication in the IPO Gazette. (Sec. 46, IPC) using, making, or selling the invention including any data related
thereto, solely for purposes reasonably related to the development
Term or Duration of a Patentable Invention and submission of information and issuance of approvals by
It shall be twenty (20) years from the filing date of the application. (Sec. 54, government regulatory agencies required under any law of the
IPC) Philippines or of another country that regulates the manufacture,
construction, use or sale of any product.
NOTE: The patentee’s exclusive rights exist only during the term of the patent,
hence, after the cutoff date, the exclusive rights no longer exist. (Philippine The data submitted by the original patent holder may be protected
Pharmawealth, Inc. v. Pfizer, Inc., G.R. No. 167715, 17 Nov. 2010) from unfair commercial use provided in Art. 39.3 of the TRIPS
Agreement; (Sec. 72.4, IPC)
7. Limitations of Patent Rights
The owner of a patent has no right to prevent third parties from e. Where the act consists of the preparation for individual cases, in a
making, using, offering for sale, selling, or importing a patented pharmacy or by a medical professional, of a medicine in accordance
product in the following circumstances: with a medical prescription; and (Sec. 72.5, IPC)

a. Using a patented product after it has been put on the market in the f. Where the invention is used in any ship, vessel, aircraft, or land
Philippines by the owner of the product, or with his express consent. vehicle of any other country entering the territory of the Philippines
temporarily or accidentally. Provided that such invention is used
In case of drugs or medicines, the said limitation applies after a drug exclusively for the needs of the ship, vessel, aircraft, or land vehicle
or medicine has been introduced in the Philippines or anywhere else in and not used for the manufacturing of anything to be sold within the
the world by the patent owner, or by any party authorized to use the Philippines. (Sec. 72.6, IPC)
invention. This allows parallel importation for drugs and medicines.
The right to import the drugs and medicines shall be available to any a. Prior User
government agency or any private third party; (Sec. 72.1, IPC) Any prior user, who, in good faith was using the invention or has
undertaken serious preparations to use the invention in his enterprise or
b. Where the act is done privately and on a noncommercial scale or business, before the filing date or priority date of the application in
for a non-commercial purpose: Provided that it does not significantly which a patent is granted, shall have the right to continue the use
prejudice the economic interest of the owner of the patent.; (Sec. thereof as envisaged in such preparations within the territory where
72.2, IPC) the patent produces its effects. (Sec. 73.1, IPC) (same with trademark

5
 To protect the patent owner, however, the prior user may only transfer 1. In situations of national emergency or other circumstances
or assign the right if it is transferred or assigned together with his of extreme urgency, the right holder shall be notified as soon
enterprise or business, or with that part of his enterprise or business in as reasonably practicable;
which is the use or preparation for use have been made. (Sec. 73.2,
IPC) 2. In the case of public non-commercial use of the patent by
the patentee, without satisfactory reason, the right holder shall
b. Use by government be informed promptly; Provided, that, the Government or third
A Government agency or third person authorized by the Government person authorized by the Government, without making a
may exploit the invention even without agreement of the patent patent search, knows or has demonstrable ground to know
owner where: (PI-JA-Na-No-D) that a valid patent is or will be used by or for the Government.

a. The Public Interest, in particular, national security, nutrition, 3. If the demand for the patented article in the Philippines is
health, or the development of other sectors, as determined by not being met to an adequate extent and on reasonable
the appropriate agency of the government, so requires; terms as determined by the Secretary of Health, the right
holder shall be informed promptly;
b. A Judicial or Administrative body has determined that the
manner of exploitation, by the owner of the patent or his licensee, 4. The scope and duration of such use shall be limited to the
is anticompetitive; purpose for which it was authorized;
c. In the case of drugs and medicines, there is a National
emergency or other circumstance of extreme urgency requiring 5. Such use shall be non-exclusive;
the use of the invention;
6. The right holder shall be paid adequate remuneration in the
d. In the case of drugs and medicines, there is a public circumstances of each case, taking into account the
Non-commercial use of the patent by the patentee, without economic value of the authorization; and
satisfactory reason; or
7. The existence of national emergency or other circumstances
e. In the case of drugs and medicines, the Demand for the of extreme urgency, in the case of drugs and medicines shall
patented article in the Philippines is not being met to an be subject to the determination of the President of the
adequate extent and on reasonable terms, as determined by the Philippines for the purpose of determining the need for such
Secretary of the Department of Health. (Sec. 74, IPC) use or other exploitation, which shall be immediately
executory. (Sec. 74.2, IPC)
Unless otherwise provided herein, the use by the Government, or
third person authorized by the Government shall be subject, Reverse Reciprocity of Foreign Law
where applicable, to the following provisions: Any condition, restriction, limitation, diminution, requirement, penalty,
or any similar burden imposed by the law of a foreign country on a

6
 Philippine national seeking protection of intellectual property rights in insofar as such use is performed after that product has been so put on
that country, shall reciprocally be enforceable upon nationals of said the said market. (Sec. 72.1, IPC)
country, within Philippine jurisdiction. (Sec. 231, IPC) b. In the case of drugs and medicines, where the act includes testing,
using, making or selling the invention including any data related
Doctrine of Exhaustion thereto, solely for purposes reasonably related to the development
Also known as the Doctrine of First Sale, it provides that the patent and submission of information and issuance of approvals by
holder has control of the first sale of his invention. He has the government regulatory agencies required under any law of the
opportunity to receive the full consideration for his invention from his Philippines or of another country that regulates the manufacture,
sale. Hence, he exhausts his rights in the future control of his invention. construction, use or sale of any product; (Ibid.)
c. Compulsory licensing; (Sec. 76.1, IPC,)
It espouses that the patentee who has already sold his invention and d. Use of Invention by Government; (Ibid.) and
has received all the royalty and consideration for the same will be e. Procedures on Issuance of a Special Compulsory License under the
deemed to have released the invention from his monopoly. The TRIPS Agreement for patented drugs and medicines. (Ibid.)
invention thus becomes open to the use of the purchaser without
further restriction. (Adams v. Burke, 84 U.S. 17, 1873) Contributory Infringement
Anyone who actively induces the infringement of a patent or provides the
GR: Patent rights are exhausted by first sale in the Philippines infringer with a component of a patented product or of a product produced
(Domestic exhaustion). because of a patented process knowing it to be especially adopted for
XPN: On drugs and medicines: first sale in any jurisdiction exhausts the infringing the patented invention and not suitable for substantial non-
rights of the owner thereof (International exhaustion). (R.A. No. 9502) infringing use shall be liable as a contributory infringer and shall be jointly and
severally liable with the infringer. (Sec. 76.6, IPC)
8. Patent Infringement
- Repeated infringement - criminal action To succeed on a claim of inducement, patentee must show, first, that there
- First time - civil and administrative has been direct infringement, and second, that the alleged infringer
knowingly induced infringement and possessed of specific intent to
Civil Infringement encourage another’s infringement. (Amador, 2007)
GR: The making, using, offering for sale, selling, or importing a patented
product or a product obtained directly or indirectly from a patented process, In patent infringement, one who induced someone to make, use, offer for
or the use of a patented process without the authorization of the patentee sale, sell, or import a patented product or a product obtained directly or
constitutes patent infringement. (Sec. 76.1, IPC) indirectly from a patented process, or facilitated the use of a patented
process without the authorization of the patentee will also be held liable for
XPNs: patent infringement. (Gepty, 2019)
a. Using a patented product which has been put on the market in the
Philippines by the owner of the product, or with his express consent, Criminal Infringement

7
 If infringement is repeated by the infringer or by anyone in connivance with A civil action for infringement of a patent may be filed despite the pendency
him after finality of the judgment of the court against the infringer, the of a petition in the IPO for cancellation of the patent. (Luchan v. Honrado,
offenders shall, without prejudice to the institution of a civil action for CA-G.R. No. 04706-SP, 06 July 1976)
damages, be criminally liable. (Sec. 84, IPC)
2. Criminal action for repetition of infringement – If the infringement is
Remedies of a Patent Owner repeated by the infringer or by anyone in connivance with him after finality of
1. Civil action for infringement – The owner may bring a civil action with the judgment of the court against the infringer, the infringer offender shall be
the appropriate Regional Trial Court to recover from infringer the criminally liable and upon conviction, shall suffer imprisonment of not less than
damages sustained by the former, plus attorney’s fees and other six (6) months but not more than three (3) years and/or a fine not less than
litigation expenses, and to secure an injunction for the protection of P100,000.00 but not more than P300,000.00. (Sec. 84, IPC)
his rights. (Sec 76.2, IPC)
Limitation: The criminal action prescribes three (3) years from the commission
Limitations: of the crime. (Ibid.)
a. No damages can be recovered for acts of infringement
committed more than four (4) years before the filing of the NOTE: Infringement entails only civil liability in the first instance, but it becomes
action for infringement. (Sec. 79, IPC) a criminal offense when it is repeated by the infringer after finality of the
b. Damages cannot be recovered for acts of infringement judgment of the court against the infringer. (Amador, 2007)
committed before the infringer had known or had reasonable
grounds to know of the patent. (Sec. 80, IPC) 3. Administrative remedy – Where the number of damages claimed is not less
c. If the damages are inadequate or cannot be reasonably than P200,000.00, the patentee may choose to file an administrative action
ascertained with reasonable certainty, the court may award against the infringer with the Bureau of Legal Affairs (BLA). The BLA can issue
by way of damages a sum equivalent to reasonable royalty. injunctions and order direct infringer to pay patentee damages. However,
(Sec 76.3, IPC) unlike regular courts, the BLA may not issue search and seizure warrants or
d. The court may, according to the circumstances of the case, warrants of arrest. (Sec. 10.2(a), IPC)
award damages in a sum above the amount found as actual
damages sustained: Provided, That the award does not 4. Disposal or Destruction of Infringing material – The court may, in its
exceed three (3) times the amount of such actual damages. discretion, order that the infringing goods, materials and implements
(Sec. 76.4, IPC) predominantly used in the infringement be disposed of outside the channels
of commerce of destroyed, without compensation. (Sec.76.5, IPC)
If the infringement is a continuing activity, the aggrieved patent holder retains
his cause of action for damages and injunction but may not claim damages 5. Provisional measures - Any patentee, or anyone possessing any right, title,
beyond 4 years counted back from the institution of the action. (Amador, or interest in and to the patented invention, whose rights have been infringed,
2007) may bring a civil action before a court of competent jurisdiction, to recover
from the infringer such damages sustained thereby, plus attorney’s fees and

8
 other expenses of litigation, and to secure an injunction for the protection of
his rights. (Sec. 76.2, IPC) A patent holder cannot enforce his rights if he has committed inequitable
conduct in the prosecution of his patent application. (Amador, 2007)
Exclusive right to monopolize the subject matter of the patent exists only
within the term of the patent. Upon the expiration of the term, there is no Burden of Proof in an Action for Infringement
more basis for the issuance of a restraining order or injunction. (Phil. The burden of proof to substantiate a charge of infringement is with the
Pharmawealth, Inc. v. Pfizer, Inc., G.R. No. 167715, 17 Nov. 2010) plaintiff. Where the plaintiff introduces the patent in evidence, and the same
is due in form, there is created a prima facie presumption of correctness and
Jurisdiction validity. The decision of the IPO in granting the patent is presumed to be
An action for infringement of patent falls within the jurisdiction of the regular correct. The burden of going forward with the evidence then shifts to the
courts rather than the Intellectual Property Office. (Amancor, Inc. v. Salas, defendant to overcome by competent evidence this legal presumption.
CA-G.R. No. 06049-SP, 10 Oct. 1985) (Maguan v. Court of Appeals, G.R. No. L-45101, 28 Nov. 1986)

Persons who can File an Action for Infringement a. Tests in Patent Infringement
1. The patentee or his successors-in-interest may file an action for i. Literal Infringement - The extent of protection conferred
infringement. (Creser Precision Systems, Inc. v. CA, G.R. No. 118708, 02 Feb. by the patent shall be determined by the claims, which
1998) are to be interpreted in the light of description and
drawings. (Sec. 75, IPC)
A person or entity who has not been granted letters patent over an invention There is infringement of patent under this test if one
and has not acquired any light or title thereto either as assignee or as makes, uses or sells an item that contains all elements
licensee, has no cause of action for infringement because the right to of the patent claim. The test is satisfied in either of the
maintain an infringement suit depends on the existence of the patent. (Ibid.) following:
a. Exactness rule: The item being sold, made, or used
GR: A licensee may NOT maintain a suit for infringement. Only the patentees, conforms exactly to the patent claim of another; or
his heirs, assignee, grantee, or personal representatives may bring an action
for infringement. b. Additional rule: One makes, uses, or sells an item that
has all the elements of the patent claim of another plus
XPN: If the licensing agreement provides that the licensee may bring an other elements. (Aquino, 2019)
action for infringement or if he was authorized to do so by the patentee
through a special power of attorney. ii. Doctrine of Equivalents - Due account shall be taken of
elements which are equivalent to the elements
2. Any foreign national or juridical entity who meets the requirements of Sec. 3 expressed in the claims, so that a claim shall be
and not engaged in business in the Philippines, to which a patent has been considered to cover not only all the elements
granted or assigned, whether or not it is licensed to do business in the expressed therein, but also equivalents. (Sec. 75, IPC)
Philippines. (Sec. 77, IPC)

9
 b. That the patent does not disclose the invention in a
Meaning of “Equivalent Device” manner sufficiently clear and complete for it to be
An Equivalent Device is such as a mechanic of ordinary carried out by any person skilled in the art; or
skill in construction of similar machinery, having the c. That the patent is contrary to public order or morality
forms, specifications, and machine before him, could (Sec. 61, IPC) and
substitute in the place of the mechanism described 3. Prescription. (Sec. 84, IPC)
without the exercise of the inventive faculty. (Gsell v.
Yap-Jue, G.R. No. L-4720, 19 Jan. 1909, citing Burden v. Effect of Invalid Patent
Corning) In an action for infringement, if the court shall find the patent
or any claim to be invalid, it shall cancel the same, and the
Steps in Determining the Presence of Infringement: Director of Legal Affairs upon receipt of the final judgment of
1. Determine if there is literal infringement. If there is, cancellation by the court, shall record that fact in the registrar
defendant is liable; and of the Office and shall publish a notice to that effect in the IPO
2. If there is no literal infringement, then the doctrine of Gazette. (Sec. 82, IPC)
equivalents should be applied.
(Funa, 2017) 9. Licensing
Modes of Obtaining License to Exploit Patent Rights
Process Patent Infringement 1. Voluntary licensing; and (Sec. 85, IPC)
If the subject matter of a patent is a process for 2. Compulsory licensing. (Sec. 93, IPC)
obtaining a product, any identical product shall be
presumed to have been obtained through the use of a. Voluntary
the patented process if the product is new or there is The grant by the patent owner to a third person of the right to
substantial likelihood that the identical product was exploit a patented invention.
made by the process and the owner of the patent has
been unable despite reasonable efforts, to determine Voluntary licensing encourages the transfer and dissemination
the process actually used. (Sec. 78, IPC) of technology, prevent or control practices and conditions
that may in particular cases constitute an abuse of intellectual
b. Defenses in Action for Infringement property rights having an adverse effect on competition and
Defenses in Action for Infringement trade. (Sec. 85, IPC)
1. Invalidity of the patent; (Sec. 81, IPC):
2. Any of the grounds for cancellation of patents: Rights of a Licensor and Licensee in Voluntary Licensing
a. That what is claimed as the invention is not new or In the absence of any provision to the contrary in the
patentable; technology transfer arrangement, the grant of a license shall
not prevent the licensor from granting further licenses to third

10
 person nor from exploiting the subject matter of the 6. Where the demand for patented drugs and medicines is not
technology transfer arrangement himself. (Sec. 89, IPC) being met to an adequate extent and on reasonable terms, as
determined by the Secretary of the Department of Health.
Licensee shall be entitled to exploit the subject matter of the (Sec. 93, IPC)
technology transfer arrangement during the whole term of the
technology transfer arrangement. (Sec. 90, IPC) The right to grant a special compulsory license under this
section shall not limit or prejudice the rights, obligations and
b. Compulsory flexibilities provided under the TRIPS Agreement and under
Compulsory Licensing - may file with the bureau of legal affairs Philippine laws, particularly Secs. 72.1 and 74 of the IPC, as
A process by which the government will allow the exploitation amended.
of the patented invention based on valid and justifiable
grounds. (Gepty, 2019) It is also without prejudice to the extent to which drugs and
medicines produced under a compulsory license can be
Grounds for Compulsory Licensing exported as allowed in the TRIPS Agreement and applicable
The Director General of the IPO may grant a license to exploit laws. (Sec. 93-A, IPC)
a patented invention, even without the agreement of the
patent owner, in favor of any person who has shown his Requirement to Obtain Authorization from the Patent Owner on
capability to exploit the invention, under any of the following Reasonable Commercial Terms and Conditions
circumstances: GR: The license will only be granted after the petitioner has
1. National emergency or other circumstances of extreme made efforts to obtain authorization from the patent owner on
urgency; reasonable commercial terms and conditions but such efforts
2. Where the public interest, in particular, national security, have not been successful within a reasonable period of time.
nutrition, health or the development of other vital sectors of the (Sec. 95.1, IPC)
national economy as determined by the appropriate agency
of the Government, so requires; XPNs:
3. Where a judicial or administrative body has determined that 1. Where the petition for compulsory license seeks to remedy a
the manner of exploitation by the owner of the patent or his practice determined after judicial or administrative process to
licensee is anti- competitive; be anti- competitive;
4. In case of public non-commercial use of the patent by the 2. In situations of national emergency or other circumstances
patentee, without satisfactory reason; of extreme urgency;
5. If the patented invention is not being worked in the 3. In cases of public non-commercial use; and
Philippines on a commercial scale, although capable of being 4. In cases where the demand for the patented drugs and
worked, without satisfactory reason: Provided, that the medicines in the Philippines is not being met to an adequate
importation of the patented article shall constitute working or extent and on reasonable terms, as determined by the
using the patent; or Secretary of the Department of Health. (Sec. 95.2, IPC)

11
 5. The license may be terminated upon proper showing that
circumstances which led to its grant have ceased to exist and
Compulsory License based on Interdependence of Patents are unlikely to recur: Provided, That adequate protection shall
If the invention protected by a patent, hereafter referred to as be afforded to the legitimate interest of the licensee; and
the "second patent," within the country cannot be worked 6. The patentee shall be paid adequate remuneration taking
without infringing another patent, hereafter referred to as the into account the economic value of the grant or authorization,
"first patent," granted on a prior application or benefiting from except that in cases where the license was granted to remedy
an earlier priority, a compulsory license may be granted to the a practice which was determined after judicial or
owner of the second patent to the extent necessary for the administrative process, to be anti-competitive, the need to
working of his invention, subject to the following conditions: correct the anti-competitive practice may be taken into
1. The invention claimed in the second patent involves an account in fixing the amount of remuneration. (Sec. 100, IPC)
important technical advance of considerable economic
significance in relation to the first patent; Amendment of Compulsory License
2. The owner of the first patent shall be entitled to a Upon the request of the patentee or the licensee, the Director
cross-license on reasonable terms to use the invention claimed of Legal Affairs may amend the decision granting the
in the second patent; compulsory license, upon proper showing of new facts or
3. The use authorized in respect of the first patent shall be circumstances justifying such amendment. (Sec. 101.1, IPC)
non-assignable except with the assignment of the second
patent; and Cancellation of Compulsory License
4. The terms and conditions of Secs. 95, 96 and 98 to 100 of IP Upon the request of the patentee, the Director may cancel
Code. (Sec. 97, IPC) the compulsory license:
1. If the ground for the grant of the compulsory license no
Terms and Conditions of Compulsory License longer exists and is unlikely to recur;
1. The scope and duration of such license shall be limited to 2. If the licensee has neither begun to supply the domestic
the purpose for which it was authorized; market nor made serious preparation therefor;
2. The license shall be non-exclusive; 3. If the licensee has not complied with the prescribed terms of
3. The license shall be non-assignable, except with that part of the license. (Sec. 101.2, IPC)
the enterprise or business with which the invention is being
exploited; Surrender of Compulsory License
4. Use of the subject matter of the license shall be devoted The licensee may surrender the license by a written declaration
predominantly for the supply of the Philippine market: Provided submitted to the Intellectual Property Office.
that this limitation shall not apply where the grant of the license
is based on the ground that the patentee's manner of The Director shall cause the amendment, surrender, or
exploiting the patent is determined by judicial or administrative cancellation in the Register, notify the patentee, and/or the
process, to be anticompetitive.

12
 licensee, and cause notice thereof to be published in the IPO Form of Assignment
Gazette. (Sec. 101.3 and 101.4, IPC) The assignment must be in writing, acknowledged before a notary
public or other officer authorized to administer oath or perform
Licensee’s Exemption from Liability notarial acts, and certified under the hand and official seal of the
Any person who works a patented product, substance and/or notary or such other officer. (Sec. 105, IPC)
process under a license granted under this Chapter, shall be
free from any liability for infringement: Provided however, that Effect of an Assignment of a Patent
in the case of voluntary licensing, no collusion with the licensor The assignment works as an estoppel by deed, preventing the assignor
is proven. This is without prejudice to the right of the rightful from denying the novelty and utility of the patented invention when
owner of the patent to recover from the licensor whatever he sued by the assignee for infringement.
may have received as royalties under the license. (Sec. 102,
IPC) Effect if the Assignment was not recorded in the IPO
A deed of assignment affecting title shall be void as against any
10. Assignment and Transmission of Rights subsequent purchaser or mortgagee for valuable consideration and
Patents or applications for patents and inventions to which they relate, without notice unless, it is so recorded in the Office, within three (3)
shall be protected in the same way as the rights of other property months from the date of said instrument, or prior to the subsequent
under the Civil Code. purchase or mortgage. However, even without recording, the
Inventions and any right, title or interest in and to patents and instruments are binding upon the parties.
inventions covered thereby, may be assigned or transmitted by
inheritance or bequest or may be the subject of a license contract. TRADEMARK
(Sec. 103, IPC) 1. Marks vs. Collective Marks vs. Trade names
Mark
Manner of Effecting Transfer of Rights - Any visible sign capable of distinguishing the goods (trademark) or
1. By inheritance or bequest; or services (service mark) of an enterprise and shall include a stamped or
2. License contract marked container of goods. (Sec. 121.1, IPC)
Trademark
Assignment of Inventions - It is any distinctive word, name, symbol, emblem, sign or device or any
An assignment may be of the entire right, title or interest in and to the combination thereof, adopted and used by a manufacturer or
patent and the invention covered thereby, or of an undivided share merchant on his goods to identify and distinguish them from those
of the entire patent and invention, in which event the parties become manufactured, sold or dealt by others. (Dermaline, Inc. v. Myra
joint owners thereof. An assignment may be limited to a specified Pharmaceuticals, Inc., G.R. No. 190065, 26 Aug. 2010)
territory. (Sec. 104, IPC)
Purpose of Trademark
1. To indicate origin or ownership of the articles to which they are
attached;

13
 2. To guarantee that those articles come up to a certain standard of The registration of a collective mark, or an application therefore shall not be
quality; and the subject of a license contract.
3. To advertise the articles they symbolized. (Mirpuri v. CA, G.R. No.
114508, 19 Nov. 1999) Trade Name
Name or designation identifying or distinguishing an enterprise. (Sec. 121.3,
Marks which may be Registered IPC), same with corporate name
Any word, name, symbol, emblem, device, figure, sign, phrase, or any
combination thereof except those enumerated under Sec. 123 of the IPC. Any individual name or surname, firm name, device or word used by
manufacturers, industrialists, merchants, and others to identify their businesses,
Collective Mark vocations, or occupants. (Converse Rubber Corp. v. Universal Rubber
Any visible sign designated as such in the application for registration and Products Inc., G.R. No. L-27906, 08 Jan. 1987)
capable of distinguishing the origin or any other common characteristic,
including the quality of goods or services of different enterprises which use the A trade name need not be registered with the IPO before an infringement suit
sign under the control of the registered owner of the collective mark. (Sec. may be filed by its owner against the owner of an infringing trademark. All
121.2, IPC) that is required is that the trade name is previously used in trade or commerce
in the Philippines. (Coffee Partners Inc. v. San Francisco Coffee and Roastery,
A "collective mark" or “collective trade-name" is a mark or trade name used Inc., G.R. No. 169504, 03 Mar. 2010)
by the members of a cooperative, an association or other collective group or
organization. (Sec. 40, RA. No. 166) Limitations on Use of Trade Name or Business Name
A person may NOT:
Contents of an Application for Registration of a Collective Mark 1. Use a name if the word is generic; (Lyceum of the Philippines v. CA,
1. The application shall designate the mark as a collective mark; and G.R. No. 101897, 05 Mar. 1993)
2. Accompanied by a copy of the agreement, if any, governing the use 2. Use any name indicating geographical locations; (Ang Si Heng v.
of the collective mark. (Sec. 167.2, IPC) Wellington Department Store, Inc., G.R. No. L-4531, 10 Jan. 1953)
3. Use any name or designation contrary to public order or morals;
Grounds for the Cancellation of Collective Marks 4. Use a name if it is liable to deceive trade circles or the public as to the
The Court shall cancel the registration of a collective mark if the person nature of the enterprise identified by that name; (Sec. 165.1, IPC)
requesting the cancellation proves that: 5. Subsequent use of the trade name by a third party, whether as a
1. Only the registered owner uses the mark; trade name or a mark or collective mark, or any such use of a similar
2. He uses or permits its use in contravention of the agreements referred trade name or mark, likely to mislead the public, shall be deemed
to in Subsection 166.2; and unlawful; (Sec. 165.2(b), IPC)
3. He uses or permits its use in a manner liable to deceive trade circles or 6. Copy or simulate the name of any domestic product (for imported
the public as to the origin or any other common characteristics of the products);
goods or services concerned. (Sec. 167.3, IPC) 7. Copy or simulate a mark registered in accordance with the provisions
of IPC (for imported products); and

14
 8. Use mark or trade name calculated to induce the public to believe Rights Conferred to the Owner of a Registered Mark
that the article is manufactured in the Philippines, or that it is The owner of a registered mark shall have the exclusive right to:
manufactured in any foreign country or locality other than the country 1. Use the mark for one’s own goods or services; and
or locality where it is in fact manufactured. 2. Prevent third parties from using, without his consent, signs or containers
which are identical or similar to the registered trademark where such use
NOTE: Change in the ownership of a trade name is made with the transfer of would result in a likelihood of confusion.
the enterprise or part thereof identified by that name. (Sec. 165.4, IPC)
In case of the use of an identical sign for identical goods or services, a
2. Acquisition of Ownership of Mark likelihood of confusion shall be presumed. (Secs. 147 and 147.1, IPC)
The right to register a trademark should be based on ownership. When the
applicant is not the owner of the trademark being applied for, he has no right Trademark owner enjoys protection in product and market areas that are the
to apply for the registration of the same. Under the Trademark Law, only the normal potential expansion of his business. (Dermaline Inc.. v. Myra
owner of the trademark, trade name or service mark used to distinguish his Pharmaceuticals, Inc., GR No. 190065, 16 Aug. 2010)
goods, business or service from the goods, business or service of others is
entitled to register the same. An exclusive distributor does not acquire any Periods to File Declaration of Actual Use
proprietary interest in the principal's trademark and cannot register it in his 1. Three (3) years from the filing date of the application;
own name unless it has been validly assigned to him. (Superior Commercial 2. One (1) year from the 5th anniversary of the date of registration of the
Enterprises, Inc. v. Kunnan Enterprises, G.R. No. 169974, 20 Apr. 2010) mark;
3. Within one year from date of renewal; and
Trademarks are acquired solely through registration. For marks that are first 4. Within one year from the 5th anniversary of each renewal. (Sec. 204,
used and/or registered after the effectiveness of the IP Code, ownership is no IPOPHL MC NO. 2023- 001)
longer dependent on the fact of prior use in light of the adoption of the
first-to-file rule and the rule that ownership is acquired through registration. Instances when Non-Use of a Mark is Excused
(Zuneca Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850, 08 Sept. 2020) 1. If caused by circumstances arising independently of the will of the owner;
(Sec. 152.1, IPC)
Rights Over a Trademark Conferred by Registration
The rights in a mark shall be acquired through registration made validly in NOTE: Lack of funds shall not excuse non- use of a mark. (Sec. 152.1, IPC)
accordance with the provisions of the IP Code. (Sec. 122, IPC) The filing date
of application is the operative act to acquire trademark rights. 2. A use which does not alter its distinctive character though the use is
different from the form in which it is registered; (Sec. 152.2, IPC)
Prior Use of Mark as a Requirement 3. Use of mark in connection with one or more of the goods/services
Actual prior use in commerce in the Philippines has been abolished as a belonging to the class in which the mark is registered shall prevent its
condition for the registration of trademark. cancellation or removal in respect of all other goods or services of the same
class.; (Sec. 152.3, IPC)

15
 4. Use of a mark by a company related to the applicant/registrant; (Sec.
152.4, IPC) The two concepts of corporate name or business name and trademark or
5. Use of a mark by a person controlled by the registrant. (Sec. 152.4, IPC) service mark are not mutually exclusive. It is common, indeed likely, that the
name of a corporation or business is also a trade name, trademark, or service
Duration or Effectivity of Trademark Registration mark. (Shangri-La International Hotel Management, Ltd. v. Developers Group
The trademark registration remains in force for 10 years, subject to indefinite of Companies, Inc., supra)
renewals of 10 years each.
A trade name of a national of a State that is a party to the Paris Convention,
The registrant is required to file a declaration of actual use and evidence to whether or not the trade name forms part of a trademark, is protected
that effect, or show valid reasons based on the existence of obstacles to such “without the obligation of prior filing or registration.” (Fredco Manufacturing
use, within one (1) year from the fifth anniversary of the date of the Corporation v. President and Fellows of Harvard College (Harvard University),
registration of the mark. Otherwise, the mark shall be removed from the G.R. No. 185917, 01 June 2011; Art. 8, Paris Convention for the Protection of
Register by the IPO. (Secs. 145 and 146, IPC) Industrial Property)

3. Acquisition of Ownership of Trade Name A trade name need not be registered with the IPO before an infringement suit
Acquisition of Trade Names may be filed by its owner against the owner of an infringing trademark. All
A name or designation may not be used as a trade name if by its nature or that is required is that the trade name is previously used in trade or commerce
the use to which such name or designation may be put, it is contrary to public in the Philippines. A corporation has the exclusive right to use its name. The
order or morals and if, in particular, it is liable to deceive trade circles or the right proceeds from the theory that it is a fraud on the corporation which has
public as to the nature of the enterprise identified by that name. (Sec. 165.1, acquired a right to that name and perhaps carried on its business thereunder,
IPC) that another should attempt to use the same name, or the same name with a
slight variation in such a way as to induce persons to deal with it in the belief
In particular, any subsequent use of the trade name by a third party, whether that they are dealing with the corporation which has given a reputation to
as a trade name or a mark or collective mark, or any such use of a similar the name. (Coffee Partners, Inc. v. San Francisco Coffee & Roastery, Inc., G.R.
trade name or mark, likely to mislead the public, shall be deemed unlawful. No. 169504, 03 Mar. 2010)
(Sec. 165.2(b), IPC)
Effect of Registration
Ownership of a trade name may be acquired not necessarily by registration The rights in a mark shall be acquired through registration made validly in
but by adoption and use in trade or commerce. As between actual use of a accordance with the provisions of the IPC. (Sec. 122, IPC)
mark without registration, and registration of the mark without actual use
thereof, the former prevails over the latter. For a rule widely accepted and Certificate of Registration
firmly entrenched is that actual use in commerce or business is a prerequisite A certificate of registration of a mark shall be prima facie evidence of the
to the acquisition of the right of ownership. (Shangri-La International Hotel validity of the registration, the registrant's ownership of the mark, and of the
Management, Ltd. v. Developers Group of Companies, Inc., G.R. No. 159938, registrant's exclusive right to use the same in connection with the goods or
31 Mar. 2006)

16
 services and those that are related thereto specified in the certificate. (Sec. 10. Consists exclusively of signs or indications that may serve in trade to
138, IPC) Designate the kind, quality, quantity, intended purpose, value,
geographical origin, time or production of the goods or rendering of
4. Non-registrable Marks the services, or other characteristics of the goods or services;
Non-Registrable Marks (Im-F-L-E-W-Re-Mi-G- Cu-De-S-Co-Con) 11. Consists of Shapes that may be necessitated by technical factors or
1. Consists of Immoral, deceptive, or scandalous matter or falsely suggest by the nature of the goods themselves or factors that affect their
a connection with persons, institutions, beliefs, or national symbols; intrinsic value;
2. Consists of the Flag or coat of arms or other insignia of the Philippines 12. Consists of Color alone, unless defined by a given form; or
or any of its political subdivisions, or of any foreign nation; 13. Is Contrary to public order or morality (Sec. 123, IPC)
3. Consists of a name, portrait or signature identifying a particular Living
individual except by his written consent, or the name, signature, or Obligations under the Paris Convention
portrait of a deceased President of the Philippines, during the life of his In view of the obligations under the Paris Convention, the Philippines is
widow except by written consent of the widow; obligated to assure nationals of the signatory-countries that they are
4. Identical with a registered mark belonging to a different proprietor or afforded an effective protection against violation of their intellectual
a mark with an Earlier filing or priority date, in respect of: property rights in the Philippines in the same way that their own
a. The same goods or services; countries are obligated to accord similar protection to Philippine
b. Closely related goods or services; or nationals. Thus, under Philippine law, a trade name of a national of a
c. If it nearly resembles such a mark as to be likely to deceive or State that is a party to the Paris Convention, whether or not the trade
cause confusion; name forms part of a trademark, is protected without the obligation of
filing or registration. Thus, the applicant for registration of trademark is
5. Is identical with an internationally well-known mark, Whether or not it is not the lawful owner thereof and is not entitled to registration if the
registered here, used for identical or similar goods or services Provided, trademark has been in prior use by a national of a country which is a
that in determining whether a mark is well-known, account shall be signatory to the Paris Convention.
taken of;
6. Is identical with an internationally well-known mark which is Registered Example: If lacoste is an international well-known trademark, it cannot
in the Philippines with respect to non-similar goods or services. be used with the same goods, but can be used if registered as a food
Provided, that the interests of the owner of the registered mark are company.
likely to be damaged by such use; - A trade name of a national of a State that is a party to the
7. Is likely to Mislead the public as to the nature, quality, characteristics or Paris Convention, whether or not the trade name forms part of
geographical origin of the goods or services; a trademark, is protected “without the obligation of prior filing
8. Consists exclusively of signs that are Generic for the goods or services or registration.” (Fredco Manufacturing Corporation v.
that they seek to identify; President and Fellows of Harvard College (Harvard University),
9. Consists exclusively of signs or of indications that have become G.R. No. 185917, 01 June 2011; Art. 8, Paris Convention for the
Customary or usual to designate the goods or services in everyday Protection of Industrial Property)
language or in bona fide and established trade practice.

17
 5. Test to Determine Confusing Similarity Between Marks 6. Well-known Marks
The likelihood of confusion is a relative concept; to be determined only Well-known Marks
according to the particular and sometimes peculiar circumstances of each A well-known mark is a mark which is considered by the competent authority
case. In trademark cases, even more than in any other litigation, precedent of the Philippines to be well-known internationally and in the Philippines,
must be studied in light of the facts of the particular case. The wisdom of the whether or not it is registered here, as being already the mark of a person
likelihood of confusion test lies in its recognition that each trademark other than the applicant for registration. (Divina, 2021; Sec. 123.1(e), IPC)
infringement case presents its own unique set of facts. - Competent authority determines if the mark is internationally
well-known
Two (2) Types of Confusion
1. Confusion of goods (product confusion) – where the ordinarily prudent Scope of Protection of the Paris Convention
purchaser would be induced to purchase one product in the belief that he The scope of protection initially afforded by the Paris Convention has been
was purchasing the other; and expanded via a nonbinding recommendation that a well-known mark should
2. Confusion of business (source or origin confusion) – where, although the be protected in a country even if the mark is neither registered nor used in
goods of the parties are different, the product, the mark of which registration that country. (Sehwani, Incorporated v. In-N-Out Burger, Inc., G.R. No. 171053,
is applied for by one party, is such as might reasonably be assumed to 15 Oct. 2007)
originate with the registrant of an earlier product, and the public would then
be deceived either into that belief or into the belief that there is some Internationally Well-known Mark
connection between the two parties, though inexistent. (Mang Inasal 1. Considered by the competent authority of the Philippines to be
Philippines, Inc. v. IFP Manufacturing Corporation, G.R. No. 221717, 19 June “well-known” internationally and in the Philippines as the mark of a person
2017) other than the applicant or registrant;
2. Need not be used or registered in the Philippines; and
a. Dominancy Test 3. Need not be known by the public at large but only by relevant sector of
The test of dominancy focuses on the similarity of the prevalent the public. (Sec. 123.1(e), IPC)
features of the competing trademarks which might cause confusion or
deception. (Divina, 2021) NOTE: If the well-known mark is registered in the Philippines, any mark identical
with, confusingly Is identical with, or confusingly similar to, or constitutes a
If the competing trademark contains the main or essential or translation of a mark considered well- known in accordance with the
dominant features of another, and confusion and deception is likely to preceding paragraph, which is registered in the Philippines with respect to
result, infringement takes place. (UFC Philippines, Inc. v. Fiesta Barrio goods or services which are not similar to those with respect to which
Manufacturing Corp., G.R. No. 198889, 20 Jan. 2016) registration is applied for: Provided, That use of the mark in relation to those
goods or services would indicate a connection between those goods or
Note: The Holistic Test is already abandoned . services, and the owner of the registered mark: Provided further, That the
interests of the owner of the registered mark are likely to be damaged by
such use. (Sec. 123.1(i), IPC; Divina, 2022)

18
 Factors to be considered in Determining Well- Known Marks
1. Duration, extent, and geographical area of any use of the mark; in 7. Rights Conferred by Registration
particular, the duration, extent and geographical area of any promotion of Rights Conferred to the Owner of a Registered Mark
the mark, including advertising or publicity and the presentation, at fairs or The owner of a registered mark shall have the exclusive right to:
exhibitions, of the goods and/or services to which the mark applies; 1. Use the mark for one’s own goods or services;
2. Market share, in the Philippines and in other countries, of the goods and/or 2. Prevent third parties from using, without his consent, signs or containers
services to which the mark applies; which are identical or similar to the registered trademark where such use
3. Degree of the inherent or acquired distinction of the mark; would result in a likelihood of confusion.
4. Quality image or reputation acquired by the mark;
5. Extent to which the mark has been registered in the world; In case of the use of an identical sign for identical goods or services, a
6. Exclusivity of registration attained by the mark in the world; likelihood of confusion shall be presumed. (Secs. 147 and 147.1, IPC)
7. Extent to which the mark has been used in the world;
8. Exclusivity of use attained by the mark in the world; Trademark owners enjoy protection in product and market areas that are the
9. Commercial value attributed to the mark in the world; normal potential expansion of his business. (Dermaline Inc. v. Myra
10. Record of successful protection of the rights in the mark; Pharmaceuticals, Inc.., GR No. 190065, 16 Aug. 2010)
11. Outcome of litigations dealing with the issue of whether the mark is a
well-known mark; and Limitations
12. Presence or absence of identical or similar marks validly registered for or Except in cases of importation of drugs and medicines allowed under Sec.
used on identical or similar goods or services and owned by persons other 72.1 of the IPC and of off- patent drugs and medicines, the owner of a
than the person claiming that his mark is a well-known mark. registered mark shall have the exclusive right to prevent all third parties not
having the owner’s consent from using in the course of trade identical or
Priority Right similar signs or containers for goods or services which are identical or similar to
An application for registration of a mark filed in the Philippines by a person those in respect of which the trademark is registered where such use would
referred to Sec. 3 of the IPC, and who previously duly filed an application for result in a likelihood of confusion. In case of the use of an identical sign for
registration of the same mark in one of those countries, shall be considered as identical goods or services, a likelihood of confusion shall be presumed.
filed as of the day the application was first filed in the foreign country. No
registration of a mark shall be granted until such mark has been registered in There shall be no infringement of trademarks or trade names of imported or
the country of origin of the applicant. (Sec. 131, IPC) sold patented drugs and medicines allowed under Sec. 72.1 of the IPC, as
well as imported or sold off-patent drugs and medicines; Provided, That said
The owner of a mark seeking priority right is not entitled to sue for acts drugs and medicines bear the registered marks that have not been
committed prior to the date on which his mark was registered in the tampered, unlawfully modified, or infringed upon, under Sec. 155 of the IPC.
Philippines: except in the case of an owner of a well-known mark where he (Sec. 147, IPC, as amended by R.A. No. 9502)
can oppose its registration or petition the cancellation of its registration or sue
for unfair competition, without prejudice to availing himself of other remedies
provided for under the law. (Ibid.)

19
 When the Rights Terminate application shall be refused, or the mark shall be removed from the Register
The rights conferred by trademark registration end upon cancellation of the by the Director. (Sec. 124.2, IPC)
certificate of registration by the IPO in the cases allowed by law. (Divina, A fifth anniversary use is also required. This is done by filing a declaration of
2021) actual use and evidence to that effect within one year from the fifth
anniversary of the registration. The form and evidence of use required are
Certificate of Registration Prima Facie Evidence of Validity similar to the third year DAU. Failure to submit the fifth anniversary use and
A certificate of registration of a mark shall be prima facie evidence of the evidence to that effect shall merit the cancellation of the mark. (Sec. 145,
validity of the registration, the registrant’s ownership of the mark, and of the IPC)
registrant’s exclusive right to use the same in connection with the goods or
services and those that are related thereto specified in the certificate. (Sec. Renewal of Registration
138, IPC) A certificate of registration may be renewed for periods of ten (10) years at its
expiration. Each request for renewal of registration must be made within 6
Issuance and Publication of Certificate of Registration months before the expiration of the registration or within 6 months after such
The certificate of registration shall be issued when the period for filing the expiration on payment of the additional fee prescribed. (Sec. 146, IPC)
opposition has expired, or when the Director of Legal Affairs shall have denied
the opposition, and upon payment of the required fee. (Sec. 136, IPC) 8. Cancellation of Registration
The registered mark shall be published, in the form and within the period fixed - In bad faith, you know that you are not the owner but still pursue to
by the Regulations. Marks registered at the Office may be inspected free of own the mark
charge and any person may obtain copies thereof at his own expense. This
provision shall also be applicable to transactions recorded in respect of any A trademark registration may be cancelled by any person who believes that
registered mark. (Sec. 138, IPC) he will be damaged by the registration of the mark:

Duration of a Certificate of Trademark Registration 1. Within five (5) years from the date of the registration of the mark; or
A certificate of registration shall remain in force for ten (10) years, provided 2. At any time;
that the registrant shall file a declaration of actual use and evidence to that a. If the registered mark becomes the generic name for the
effect or shall show valid reasons based on the existence of obstacles to such goods or services, or a portion thereof, for which it is registered;
use, as prescribed by the Regulations, within one (1) year from the fifth b. If the mark has been abandoned;
anniversary of the date of the registration of the mark. Otherwise, the mark c. If its registration was obtained fraudulently or contrary to the
shall be removed from the Register by the Office. (Sec. 145, IPC) provisions of the IPC;
d. If the registered mark is being used by, or with the permission
Effect of Failure to file Declaration of Actual Use of, the registrant so as to misrepresent the source of the goods
The applicant or the registrant shall file a declaration of actual use (DAU) of or services on or in connection with which the mark is used; or
the mark with evidence to that effect, as prescribed by the Regulations within e. Non-use of the mark within the Philippines, without legitimate
three (3) years from the filing date of the application. Otherwise, the reason, for an uninterrupted period of 3 years. (Sec. 151, IPC)

20
 NOTE: If in a petition for cancellation of a trademark, it was established that A crucial issue in any trademark infringement case is the likelihood of
the petitioner was not its owner, prior registration can be cancelled without confusion, mistake, or deceit as to the identity, source or origin of the goods
need of filing a separate petition. (E.Y. Industrial Sales, Inc. v. Shen Dar or identity of the business as a consequence of using a certain mark.
Electricity and Machinery Co. Ltd., G.R. No. 184850, 20 Oct. 2010) Likelihood of confusion is admittedly a relative term, to be determined rigidly
- Need to file the actual used of the name, for 3 years. according to the particular (and some- times peculiar) circumstances of
each case. Thus, in trademark cases, more than in other kinds of litigation,
Use of Indications by Third Parties for Purposes other than those for which the precedents must be studied in the light of each particular case. (Mighty
Mark is Used Corporation v. E. & J. Gallo Winery, G.R. No. 154342, 14 July 2004)
Registration of the mark shall not confer on the registered owner the right to
preclude third parties from using bona fide their names, addresses, Less Stringent Standard of Likelihood of Confusion
pseudonyms, geographical name, or exact indications concerning the kind, Failure to present proof of actual confusion does not negate their claim of
quality, quantity, destination, value, place of origin, or time of production or trademark infringement. Trademark infringement requires the less stringent
of supply, of their goods or services: Provided, That such use is confined to the standard of “likelihood of confusion” only. While proof of actual confusion is
purposes of mere identification or information and cannot mislead the public the best evidence of infringement, its absence is inconsequential.
as to the source of the goods or services. (Sec. 148, IPC) (McDonalds Corporation v. L. C. Big Mak Burger, Inc., G.R. No. 143993, 18 Aug.
2004)
NOTE: The IPC deems unlawful any subsequent use of the trade name by a
third party, whether as a trade name or mark or collective mark, or any such Elements of Trademark Infringement (Re-Re-Use-Co-Co)
use of a similar trade name or mark, likely to mislead the public. (Sec. 1. The trademark being infringed is Registered in the Intellectual Property
165.2(b), IPC) Office;
2. The trademark is Reproduced, counterfeited, copied, or colorably
9. Trademark Infringement imitated by the infringer;
Infringement is the use, without consent of the trademark owner, of any 3. The infringing mark is Used in connection with the sale, offering for sale,
"reproduction, counterfeit, copy or colorable imitation of any registered mark or advertising of any goods, business, or services; or the infringing mark
or trade name in connection with the sale, offering for sale, or advertising of is applied to labels, signs, prints, packages, wrappers, receptacles or
any goods, business or services on or in connection with which such use is advertisements intended to be used upon or in connection with such
likely to cause confusion or mistake or to deceive purchasers or others as to goods, business or services;
the source or origin of such goods or services, or identity of such business; or 4. The use or application of the infringing mark is likely to cause
reproduce, counterfeit, copy or colorably imitate any such mark or trade Confusion or mistake or to deceive purchasers or others as to the
name and apply such reproduction, counterfeit, copy or colorable limitation goods or services themselves or as to the source or origin of such
to labels, signs, prints, packages, wrappers, receptacles or advertisements goods or services or the identity of such business; and
intended to be used upon or in connection with such goods, business or 5. The use or application of the infringing mark is without the Consent of
services." (Esso Standard Eastern, Inc. v. CA, G.R. No. L-29971, 31 Aug. 1982) the trademark owner or the assignee thereof. (Divina, 2021; Diaz v.
People, G.R. No. 180677, 18 Feb. 2013)

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Note: File a case in bureau of legal affairs Remedies of the Owner of the Trademark Against Infringers
- Knowledge - damages, infringer knows the that the name is already 1. Civil – filed with the Regional Trial Courts. The owner of the registered
registered ® - that symbol mark may ask the court to issue a preliminary injunction to quickly
prevent infringers from causing damage to his business. Furthermore,
the court will require the infringer to pay damages to the owner of the
mark provided the defendant is shown to have had notice of the
registration of the mark (which is presumed if a letter R within a circle is
appended) and stop him permanently from using the mark.
2. Criminal – the owner of the trademark may ask the court to issue a
search warrant and in appropriate cases, remedies available shall also
include the seizure, forfeiture, and destruction of the infringing goods
and of any materials and implements the predominant use of which
has been in the commission of the offense.
3. Administrative – same as in patent infringement cases. If the amount
of damages claimed is not less than P200,000.00, the registrant may
choose to seek redress against the infringer by filing an administrative
action against the infringer with the Bureau of Legal Affairs.

Ascertainment of the Amount of Damages in a Civil Action for Infringement

The owner of a trademark which has been infringed is entitled to actual
damages:
1. The reasonable profit which the complaining party would have made,
had the defendant not infringed his said rights; or
2. The profit which the defendant actually made out of infringement; or
3. The court may award as damages a reasonable percentage based
upon the amount of gross sales of the defendant or the value of the
services in connection with which the mark or trade name was issued.

In cases where actual intent to mislead the public or to defraud the

complainant is shown, in the discretion of the court, the damages may be
doubled. (Sec, 156.3, IPC)

22
 Limitations on the Actions for Infringement buying his merchandise under the impression that they are buying that of his
1. Right of prior user – a registered mark shall be without effect against competitors. Thus, the defendant gives his goods the general appearance of
any person who, in good faith, before filing or priority date, was using the goods of his competitor with the intention of deceiving the public that the
the mark for purposes of his business; (Sec. 159.1, IPC) goods are those of his competitor. (Republic Gas Corporation v. Petron
2. Relief against publisher – injunction is limited to the future printing Corporation, supra)
against an innocent infringer who is engaged solely in the business of
printing the mark; (Sec. 159.2, IPC) and
3. Relief against newspaper – injunction against the presentation of
advertising matter in future issues of the newspaper, magazine or in
electronic communications in case the infringement complained of is
contained in or is part of paid advertisement in such materials. (Sec.
159.3, IPC)

Requirement of Notice
The owner of the registered mark shall not be entitled to recover profits or damages
unless the acts have been committed with knowledge that such imitation is likely to
cause confusion, or to cause mistake, or to deceive.

Knowledge is presumed in the following instances:

1. The registrant gives notice that his mark is registered by displaying with the mark the
words “Registered Mark” or the letter R within a circle; or
2. The defendant had otherwise actual notice of the registration. (Sec. 158, IPC)

10. Unfair Competition

Employing deception or any other means contrary to good faith by which a

person passes off his goods or business or services for those of one who has
NOTE: There can be unfair competition and infringement at the same time.
already established goodwill, or who shall commit any acts calculated to
Q: In what way is an infringement of a trademark similar to that which pertains
produce said result. (Sec. 168.2, IPC)
to unfair competition? (2003 BAR)
A: The similarity lies in both their ability to disrupt fair competition amongst
It is the passing off (or palming off) or attempting to pass off upon the public
business enterprises and other businesses. They can also create confusion,
of the goods or business of one person as the goods or business of another
mistake, and deception as to the minds of the consumers with regard to the
with the end and probable effect of deceiving the public. Passing off (or
source or identity of their products or services due to its similarity in
palming off) takes place where the defendant, by imitative devices on the
appearance or packaging.
general appearance of the goods, misleads prospective purchasers into

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 Unfair Competition Violates Property Rights COPYRIGHT
A person who has identified in the mind of the public the goods he
manufactures or deals in, his business or services from those of others, whether A right over literary and artistic works which are original intellectual creations in the
or not a registered mark is employed, has a property right in the goodwill of literary and artistic domain protected from the moment of creation.
the said goods, business or services so identified, which will be protected in
the same manner as other property rights. (Sec. 168.1, IPC) 1. Basic Principles (Sec. 172.2, 175 and 181 only)
172.2. Works are protected by the sole fact of their creation, irrespective of
Persons Guilty of Unfair Competition their mode or form of expression, as well as of their content, quality and
1. Any person, who is selling his goods and gives them the general appearance purpose.
of goods of another manufacturer or dealer, either as to the goods
themselves or in the wrapping of the packages in which they are contained, SECTION 175. Unprotected Subject Matter. ‑ Notwithstanding the provisions of
or the devices or words thereon, or in any other feature of their appearance, Sections 172 and 173, no protection shall extend, under this law, to any idea,
which would be likely to influence purchasers to believe that the goods procedure, system, method or operation, concept, principle, discovery or
offered are those of a manufacturer or dealer, other than the actual mere data as such, even if they are expressed, explained, illustrated or
manufacturer or dealer, or who otherwise clothes the goods with such embodied in a work; news of the day and other miscellaneous facts having
appearance as shall deceive the public and defraud another of his the character of mere items of press information; or any official text of a
legitimate trade, or any subsequent vendor of such goods or any agent of legislative, administrative or legal nature, as well as any official translation
any vendor engaged in selling such goods with a like purpose; thereof. (n)
2. Any person who by any artifice, or device, or who employs any other means
calculated to induce the false belief that such person is offering the services SECTION 181. Copyright and Material Object. ‑ The copyright is distinct from
of another who has identified such services in the mind of the public; or the property in the material object subject to it. Consequently, the transfer or
3. Any person who shall make any false statement in the course of trade or who assignment of the copyright shall not itself constitute a transfer of the material
shall commit any other act contrary to good faith of a nature calculated to object. Nor shall a transfer or assignment of the sole copy or of one or several
discredit the goods, business or services of another. (Sec. 168.3, IPC) copies of the work imply transfer or assignment of the copyright. (Sec. 16, P.D.
No. 49)
Essential Elements of an Action for Unfair Competition
1. Confusing similarity in the general appearance of the goods; and Only the expression of an idea is protected by copyright, not the idea itself.
2. Intent to deceive the public and defraud a competitor. (Pearl & Dean Inc. v. Shoemart, Inc., G.R. No. 148222, 15 Aug. 2003; Joaquin,
Jr. v. Drilon, G.R. No. 108946, 28 Jan. 1999; Ching v. Salinas, G.R. No. 161295, 29
The confusing similarity may or may not result from similarity in the marks but June 2005)
may result from other external factors in the packaging or presentation of the
goods. The intent to deceive and defraud may be inferred from the similarity Functional components of useful articles, no matter how artistically designed,
of the appearance of the goods as offered for sale to the public. (McDonalds have generally been denied copyright protection unless they are separable
Corporation v. L. C. Big Mak Burger, Inc., supra) from the useful article A useful article may be copyrightable only if and only
to the extent that such design incorporates pictorial, graphic, and sculptural

24
 features that can be identified separately from and are capable of existing 4. Dramatic, choreographic works;
independently of the utilitarian aspects of the article. (Ching v. Salinas, ibid) 5. Musical compositions;
6. Works of Art;
Requirement of Originality 7. Periodicals and Newspapers;
Originality means that it must have been created by the author’s own skill, 8. Works relative to Geography, topography, architecture, or science;
labor, and judgment without directly copying or evasively imitating the work 9. Works of Applied art;
of another.; and (Ching Kian Chuan v. CA, G.R. No. 130360, 15 Aug. 2001) 10. Works of a Scientific or technical character;
11. Photographic works;
NOTE: Minimal degree of creativity suffices. Elements of Originality 12. Audiovisual works and cinematographic works;
1. Independently created by the author; and 13. Pictorial illustrations and advertisements;
2. Possesses some minimal degree of creativity. 14. Computer programs; and
15. Other literary, scholarly, scientific, and artistic
Time when Copyright Vests works. (Sec. 172.1, IPC)
Principle of Automatic Protection – Works are protected from the moment of
their creation, irrespective of their mode or form of expression, as well as of b. Derivative Works
their content, quality, and purpose (Sec. 172.2, IPC). Derivative Works
1. Dramatizations, translations, adaptations, abridgements,
The certificates of registration and deposit issued by the National Library and arrangements, and other alterations of literary or artistic works;
the Supreme Court Library serve merely as a notice of recording and and
registration of the work but do not confer any right or title upon the registered 2. Collections of literary, scholarly, or artistic works and
copyright owner or automatically put his work under the protective mantle of compilations of data and other materials which are original by
the copyright law. It is not a conclusive proof of copyright ownership. As it is, reason of the selection or coordination or arrangement of their
non- registration and deposit of the work within the prescribed period only contents. (Sec. 173.1, IPC)
makes the copyright owner liable to pay a fine. (Manly Sportswear
Manufacturing Inc. v. Dadodette Enterprises and/or Hermes Sports Center, NOTE: Derivative works shall be protected as new works, provided that
G.R. No. 165306, 20 Sept. 2005) such new work shall not affect the force of any subsisting copyright
upon the original works employed or any part thereof or be construed
2. Copyrightable Works to imply any right to such use of the original works, or to secure or
a. Original works extend copyright in such original works. (Sec. 173.2, IPC)
Original works include in particular the following literary and artistic
works: (Bo-L2-D-M-Wa-P-G-A-S-P-A-P-C-O) 3. Non-Copyrightable Works
1. Books, pamphlets, articles, and other writings; a. Idea, procedure, system, method or operation, concept, principle,
2. Lectures, sermons, addresses, dissertations prepared for oral discovery, or mere data as such, even if they are expressed,
delivery, whether or not reduced in writing or other material form; explained, illustrated or embodied in a work;
3. Letters; b. News of the day and other items of press information;

25
 c. Any official text of a legislative, administrative, or legal nature, as well f. Public performance;
as any official translation thereof; (Sec. 175, IPC) g. Other communications to the public.
d. Any work of the Government of the Philippines;
NOTE: Assignment of rights must be in writing to be valid; assignable and
GR: Conditions imposed prior to the approval of the government transferable
agency or office wherein the work is created shall be necessary for
exploitation of such work for profit. Such an agency or office, may, 2. Moral rights – For reasons of professionalism and propriety, the author has
among other things, impose as condition the payment of royalties. the right:
a. To require that the authorship of the works be attributed to him
XPN: No prior approval or conditions shall be required for the use of (attribution right);
any purpose of statutes, rules and regulations, and speeches, lectures, b. To make any alterations of his work prior to, or to withhold it from
sermons, addresses, and dissertations, pronounced, read, or rendered publication;
in courts of justice, before administration agencies, in deliberative c. To preserve integrity of work, object to any distortion, mutilation or
assemblies and in meetings of public character. (Sec. 176, IPC) other modification which would be prejudicial to his honor or
reputation; and
e. Statutes, rules and regulations, and speeches made in courts of d. To restrain the use of his name with respect to any work not of his own
justice, administrative agencies and in meetings of public character. creation or in a distorted version of his work. (Sec. 193, IPC)
(Sec.176.1, IPC)
NOTE: The author of the works mentioned shall have the exclusive right Persons to whom the Rights are Granted (Copyrightable Works applicable)
of making a collection of his works. (Sec. 176.2, IPC) 1. For works
f. TV programs, format of TV programs; and (Joaquin v. Drilon, G.R. No. a. Works of authors who are nationals of, or have their habitual
108946, 28 Jan. 1999) residence in, the Philippines;
g. Systems of bookkeeping. b. Audio-visual works the producer of which has his headquarters
or habitual residence in the Philippines;
4. Rights Conferred by a copyright c. Works of architecture erected in the Philippines or other artistic
Rights of Copyright Owners (1995 BAR) works incorporated in a building or other structure located in
1. Economic rights – The right to carry out, authorize or prevent the following the Philippines;
acts: (Re-Ca- F-Re-P2-O) d. Works first published in the Philippines; and
a. Reproduction of the work or substantial portion thereof; e. Works first published in another country but also published in
b. Carry-out derivative work (dramatization, translation, adaptation, the Philippines within thirty days, irrespective of the nationality
abridgement, arrangement, or other transformation of the work) ; or residence of the authors. (Sec. 221.1, IPC)
c. First distribution of the original and each copy of the work by sale or
other forms of transfer of ownership; 2. For performers
d. Rental right; a. Performers who are nationals of the Philippines;
e. Public display;

26
 b. Performers who are not nationals of the Philippines but whose d. Art. 723. Letters and other private communications in writing are
performances: owned by the person to whom they are addressed and delivered, but
i. Take place in the Philippines; they cannot be published or disseminated without the consent of the
ii. Are incorporated in sound recordings that are writer or his heirs. However, the court may authorize their publication or
protected under IPC; or dissemination if the public good or the interest of justice so requires. (n)
iii. Which has not been fixed in sound recording but are
carried by broadcast qualifying for protection under 6. Limitations on Copyright
the IPC. (Sec. 222, IPC) General Limitations on Copyright
3. Of sound recordings The following acts shall not constitute infringement of copyright: (184)
a. Sound recordings the producers of which are nationals of the 1. Recitation or performance of a work, once it has been lawfully made
Philippines; and accessible to the public, if done privately and free of charge or if
b. Sound recordings that were first published in the Philippines. made strictly for a charitable or religious institution or society;
(Sec. 223, IPC) 2. Making of quotations from a published work if they are compatible
4. For broadcasts with fair use and only to the extent justified for the purpose, including
a. Broadcasts of broadcasting organizations the headquarters of quotations from newspaper articles and periodicals in the form of
which are situated in the Philippines; and press summaries: Provided, That the source and the name of the
b. Broadcasts transmitted from transmitters situated in the author, if appearing on the work, are mentioned;
Philippines. (Sec. 224, IPC) 3. Reproduction or Communication to the public by mass media of
articles on current political, social, economic, scientific, or religious
5. Ownership of a copyright topic, lectures, addresses and other works of the same nature, which
a. If there are two authors - it will govern by co-ownership are delivered in public if such use is for information purposes and has
b. Employee in the course of employment not been expressly reserved: Provided, That the source is clearly
I. The EE, if the creation of the object of copyright is not part of indicated;
his regular duties even if the EE uses the time, facilities and 4. Reproduction and communication to the public of literary, scientific,
materials of the ER; or artistic works as Part of reports of current events (e.g. music played
Ii. The ER, if the work is the result of the performance of his or tunes on the occasion of a sporting event and such tunes were
regularly-assigned duties, unless there is an agreement, express picked up during a new coverage of the event) by means of
or implied, to the contrary. photography, cinematography or broadcasting to the extent
c. Commission Works - In the case of a work-commissioned by a person necessary for the purpose;
other than an employer of the author and who pays for it and the 5. Inclusion of a work in a publication, broadcast, or other
work is made in pursuance of the commission, the person who so communication to the public, sound recording or film, if such inclusion
commissioned the work shall have ownership of work, but the is made by way of illustration for teaching purposes and is compatible
copyright thereto shall remain with the creator, unless there is a written with fair use: Provided, That the source and of the name of the author,
stipulation to the contrary. (178.4) if appearing in the work, are mentioned;

27
 6. Recording made in educational institutions of a work included in a shall be made on a nonprofit basis and shall indicate the copyright
broadcast for the use of such educational institutions, provided that owner and the date of the original publication. (Sec. 184, IPC, as
such recording must be deleted within a reasonable period after they amended by R.A. No. 10372)
were first broadcast;
7. Making of ephemeral recordings by a broadcasting organization by 7. Doctrine of Fair Use
means of its own facilities and for use in its own broadcast; The fair use of a copyrighted work for criticism, comment, news reporting,
8. Use made of a work by or under the direction or control of the teaching including limited number of copies for classroom use, scholarship,
government, by the National Library or by educational, scientific, or research, and similar purposes is not an infringement of copyright. (Sec. 185,
professional institutions where such use is in the public interest and is IPC, as amended by Sec. 12 of R.A. No. 10372)
compatible with fair use;
9. Public performance or the communication to the public of a work, in a “Fair use” permits a secondary use that “serves the copyright objective of
place where no admission fee is charged in respect of such public stimulating productive thought and public instruction without excessively
performance or communication, by a club or institution for charitable diminishing the incentives for creativity.”
or educational purpose only, whose aim is not profit making, subject
to such other limitations as may be provided in the Regulations; Factors to be considered in determining Fair Use (P-A-N-E)
171.6. “Public performance”, xxx where persons outside the 1. Purpose and character of the use, including whether such use is of a
normal circle of a family and that family’s closest social commercial nature or is for non-profit educational purpose;
acquaintances are or can be present, irrespective of whether they 2. Amount and substantiality of the portion used in relation to the
are or can be present at the same place and at the same time, or at copyrighted work as a whole;
different places and/or at different times, and where the performance 3. Nature of the copyrighted work; and
can be perceived without the need for communication within the 4. Effect of the use upon the potential market for or value of the
meaning of Subsection 171.3 copyrighted work.

10. Public display of the original or a copy of the work not made by NOTE: YOU NEED TO CITE THE NAME OF THE AUTHOR
means of a film, slide, television image or otherwise on screen or by
means of any other device or process (e.g. Public display using posters 8. Copyright Infringement
mounted on walls and display boards), Provided, That either the work - Memorize the economic and moral rights, any violation of the rights
has been published, or, that original or the copy displayed has been will result in copyright infringement.
sold, given away or otherwise transferred to another person by the
author or his successor in title;
It is the doing by any person, without the consent of the owner of the
11. Any use made of a work for the purpose of any judicial proceedings or
copyright, of anything the sole right to do which is conferred by statute on
for the giving of professional advice by a legal practitioner;
the owner of the copyright. The act of lifting from another’s book substantial
12. Reproduction or distribution of published articles or materials in a
portions of discussions and examples and the failure to acknowledge the
specialized format exclusively for the use of the blind, visually- and
same is an infringement of copyright. (Habana v. Robles, G.R. No. 131522, 19
reading-impaired persons: Provided, that such copies and distribution
July 1999)
28
 2. Impounding during the pendency of the action sales invoices and other
Infringement documents evidencing sales;
A person infringes a right protected under this Act when one: 3. Actual Damages, including legal costs and other expenses, as he may have
1. Directly commits an infringement (malum prohibitum); incurred due to the infringement as well as the profits the infringer may have made
2. Benefits from the infringing activity of another person who commits an due to such infringement;
infringement if the person benefiting has been given notice of the infringing 4. Destruction without any compensation all infringing copies;
activity and has the right and ability to control the activities of the other 5. Moral and Exemplary damages (Sec. 216.1, IPC); or
person; or 6. Seizure and impounding of any article, which may serve as evidence in the court
3. With knowledge of infringing activity, induces, causes, or materially proceedings. (Sec. 216.2, IPC)
contributes to the infringing conduct of another (contributory infringement).
(Sec. 216, IPC, as amended by Sec. 22 of R.A. No. 10372) The copyright owner may elect, at any time before final judgment is rendered, to
recover instead of actual damages and profits, an award of statutory damages for
How Copying is Demonstrated Copying is demonstrated by: all infringements involved in an action in a sum equivalent to the filing fee of the
1. Direct evidence; or infringement action but not less than Fifty thousand pesos (P50,000.00). (Sec. 216.1,
2. Circumstantial evidence of access and substantial inquiry or the most IPC, as amended by Sec. 22 of R.A. No. 10372)
common test. (Amador, 2007).
Factors to be considered by the Court in Awarding Statutory Damages
Q: May a person have photocopies of some pages of the book of Professor Rosario 1. Nature and purpose of the infringing act;
made without violating the copyright law? (1998 BAR) 2. Flagrancy of the infringement;
A: YES, a person may photocopy some of pages of Professor Rosario’s book for as 3. Whether the defendant acted in bad faith;
long as it is not for public use or distribution, and it does not copy the substantial text 4. Need for deterrence;
or “heart” of the book. It is considered as fair use of the copyrighted work. 5. Any loss that the plaintiff has suffered or is likely to suffer by reason of the
infringement; and
Plagiarism 6. Any benefit shown to have accrued to the defendant by reason of the
Plagiarism means the theft of another person’s language, thoughts, or ideas. To infringement. (ibid)
plagiarize is to take (ideas, writings, etc.) from (another) and pass them off as one’s
own. The passing off of the work of another as one’s own is thus an indispensable Double Damages
element of plagiarism. The amount of damages to be awarded shall be doubled against any person who:
Plagiarism presupposes intent and a deliberate, conscious effort to steal another’s 1. Circumvents effective technological measures; or
work and pass it off as one’s own. (In the matter of the charges of plagiarism against 2. Having reasonable grounds to know that it will induce, enable, facilitate or
Associate Justice Mariano C. Del Castillo, A.M. No. 10-7-17-SC, 15 Oct. 2010) conceal the infringement, remove or alter any electronic rights management
information from a copy of a work, sound recording, or fixation of a performance, or
Remedies in case of Copyright Infringement (I2-D2-M-S) distribute, import for distribution, broadcast, or communicate to the public works or
1. Injunction; copies of works without authority, knowing that electronic rights management
information has been removed or altered without authority. (ibid.)

29
Criminal Penalties in case of Copyright Infringement
1. Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty
thousand pesos (P50,000) to One hundred fifty thousand pesos (P150,000) for the first
offense.;
2. Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging
from One hundred fifty thousand pesos to Five hundred thousand (P500,000) for the
second offense.;
3. Imprisonment of six (6) years and one day to nine (9) years plus a fine ranging from
Five hundred thousand pesos (P500,000) to P1,500,000 for the third offense. ; and
4. In all cases, subsidiary imprisonment in cases of insolvency. (Sec. 217, IPC)

ADDITIONAL NOTES:
1. Copyright, trademark and patent are territorial, enforceable only within the
territory.
2. Copyright Sec 3 - Rule on Reciprocity

30